DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 28 was amended to depend from independent claim 1. Claims 10-30 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 7/7/2025 is acknowledged. The restriction is still proper. Claim 28 is still distinct as the composition can be prepared by a different process so claims 28-30 are withdrawn.
Priority
This application filed May 27, 2022, which claims priority to CN202210451367.X, filed April 27/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 10, 20-21, 24-25 and 27-28 are objected because of the typo “compatilizer” . The claims should recite “compatibilizer”. Appropriate correction is required.
The drawings are objected to because the single drawing is labelled as “FIG. 1.” “Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.” (37 CFR 1.84(u)(1).) The appropriate designation is “FIGURE” or “Figure.” Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121 (d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12, 14, 16-18, 20, 22, 24, 26, 27 and 30 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “about” in claims 12, 14, 16-18, 20, 22, 24, 26, 27 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the amounts of the components recited by the instant claims are rendered indefinite.
Regarding claims 24 and 27, the combination of the weight percentages of the components adds more than 100%, which causes confusion.
Claim Interpretation
The term “about” in claims 12, 14, 16-18, 20, 22, 24, 26, 27 is interpreted to encompass 10% values outside of the range being disclosed.
Regarding The term “ raw polymeric material” and absent any special definition in the instant specification. The term “ raw polymeric material” is given its broadest reasonable interpretation BRI as a natural or a synthetic material including monomers and polymers.
Claim Analysis
Summary of Claim 10:
A material composition capable of accelerating degradation comprising:
a raw polymeric material;
a carbonate material;
a biodegradable material;
a degrading agent;
a compatibilizer material; and
plant fibers.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10-14 and 17-20, 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Forsberg et al. (US 2007/0243350) in view of Tyaniun (CN 102372858 (A)).
Regarding claim 10, Forsberg et al. teach packages made by a biodegradable composition comprising polyolefins, thereby reading on the raw polymeric material; a pro-oxidant in the form of a salt of a metal of the group consisting of Mn, Fe, Cu, Co and Ni ([0016]), thereby reading on the degrading agent; a filler such as calcium carbonate, thereby reading on the carbonate material, natural fiber such as cellulose fiber, wood fiber, thereby reading on the plant fibers and starch [0054], thereby reading on the biodegradable material (claim 17).
Forsberg et al. are silent on the compatibilizer.
However, Tyanium teaches a biodegradable composition comprising a thermoplastic starch resin, plant fiber, biodegradable material such as polylactic acid, polyester amide or a mixture thereof, polyethylene type resins, compatibilizer, lubricant and a superfine powder of an inorganic material such as calcium carbonate (abstract, [0006], claims). Considering Tyanium teaches a similar composition and the use of a compatibilizer, it would have been obvious to one of an ordinary skill in the art before the effective filing date of the claimed invention to incorporate the compatibilizer of Tyanium into the composition of Forsberg with the expected result of minimizing the interfacial tension between the immiscible polyolefin and the starch phases (see US2015-0299432 A1, [0091] resulting in improved mechanical properties.
Forsberg et al. teach the addition of the pro-oxidants into the composition promotes the acceleration of the degradability [0016], thereby reading on the capability of accelerating degradation as required by the instant claim.
Regarding claim 11, Forsberg et al. teach the biodegradable composition comprising polyolefins such as polyethylene and/or polypropylene ([0001],[0019]), as required by the instant claim.
Regarding claim 12, Forsberg et al. teach the biodegradable composition comprising 25-85 % by weight of polyolefins based on the final composition [0053], which overlaps with the claimed range (about 40 to 60 wt.%) ). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Forsberg et al..
Regarding claim 13, Forsberg et al. teach the composition comprising calcium carbonate including nanoparticles thereof (claim 17), as required by the instant claim.
Regarding claim 14, Forsberg et al. teach the composition comprising 10-70 % by weight of calcium carbonate based on the final composition [0053], which overlaps with the claimed range (about 40 to 60 wt.%) ). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Forsberg et al..
Regarding claim 17, Forsberg et al. teach the composition comprising 1-60 % by weight of starch (which correspond to the biodegradable material) based on the final composition [0053], which overlaps with the claimed range (about 1 percent by weight), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claim 18, Forsberg et al. teach the composition comprising 0.5-15 % by weight of metal salts of Mn, Fe, Cu, Co (degrading agent), based on the final composition ([0016],[0017],[0050)], which overlaps with the claimed range (about 10-30 percent by weight), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claim 19, Forsberg et al. teach the composition comprising prooxidants including stearate of iron and manganese and that these pro-oxidants are advantageously used to accelerate the degradation in the presence UV ([0016],[0017], [0029], claim 19), thereby reading on the optical degrading.
Regarding claim 20, Forsberg et al. are silent on the claimed range of compatibilizer.
However, Tyaniun teaches the addition of 2-8 parts of compatibilizer (abstract), that is approximately 0.9-9.8 % by weight of the compatibilizer based on the final composition; which overlaps with the claimed range (about 10 to 20 wt.%) ). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Tyaniun on the composition of Forsberg to minimize the interfacial tension between the immiscible polyolefin and the starch phases (see US2015-0299432 A1, [0091] resulting in improved mechanical properties of the final product.
Regarding claim 22, Forsberg et al. teach the composition comprising 10-80 % by weight of wood fibers based on the final composition [0053], which overlaps which overlaps with the claimed range (about 10-20 percent by weight), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claim 24, Forsberg et al. in view of Tyaniun teach the composition comprising 25-85 % by weight of polyolefins, 10-70 % by weight of calcium carbonate, 1-60 % by weight of starch (which correspond to the biodegradable material) [0053]; 0.5-15 % by weight of metal salts of Mn, Fe, Cu, Co (which correspond to the degrading agent) ([0016],[0017],[0050)], 2-8 parts of compatibilizer (abstract) ( approx. 0.9-9.8 % by weight of the compatibilizer) and 10-80 % by weight of wood fibers based on the final composition [0053]; as previously discussed in the rejection of claims 12, 14, 17, 18, 20 and 22). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Forsberg et al. in view of Tyaniun.
Claims 15 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Forsberg et al. (US 2007/0243350) in view of Tyaniun (CN 102372858 (A)) as set forth above claims 10-14 and further in view of Auffermann et al. (US 8,658,069).
Forsberg et al. in view of Tyanium teach the composition according to claim 10 as set forth above and incorporated herein by reference.
Regarding claim 15, Forsberg et al. in view of Tyanium are silent on the polyesters as recited by the instant claim.
In the same field of endeavor, Auffermannn et al. teach biodegradable packages films comprising blends of aliphatic-aromatic polyester (corresponding to PBAT), polylactic acid, polypropylene, polycaprolactone (corresponding to aliphatic polyesters), polyhydroxyalkanoate, polybutylene succinate adipate and combinations thereof, compatibilizer, (claim 1, abstract), natural fibers, inorganic filler (claim 9). Auffermannn et al. offer the motivation to add the claimed polyesters due to its high biodegradability and good film properties (col.8:29-36). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the claimed polyesters on the biodegradable composition of the Forsberg et al., thereby arriving at the claimed invention.
Regarding claim 23, Forsberg et al. in view of Tyanium are silent on the specific plant fibers as recited by the instant claim.
However, Auffermannn et al. teach biodegradable packages films comprising natural fibers such as jute, flax fibers, among others (col.6: 65-67). ]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one known plant fiber (i.e. rice straw) in place of another (i.e. jute or flax fiber) with the expected result of improving mechanical and thermal properties of the final product (see U.S. PG Pub. 2019-0112479) [0035] (See MPEP 2143(I)(B).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Forsberg et al. (US 2007/0243350) in view of Tyaniun (CN 102372858 (A)) as set forth above claims 10-14 and 17-20 and further in view of Scheirs et al. (US 2015/0299432 A1).
Forsberg et al. in view of Tyanium teach the composition according to claim 10 as set forth above and incorporated herein by reference.
Regarding claim 21, Forsberg et al. in view of Tyanium teach the compatibilizer is one or more of titanate, aluminate, and maleic anhydride (claim 5 of Tyanium).
Forsberg et al. in view of Tyanium are silent on the claimed compatibilizers as recited by the instant claim.
However, Scheirs et al. teach a degradable polyolefin composition comprising polypropylene or polyethylene, compatibilizer, a pro-degradant such as iron palmitate and thermoplastic starch (abstract, [0001], [0007], [0014]), wherein the compatibilizer is selected from ethylene acrylic acid copolymer, polyethylene maleic anhydride graft copolymer, among others [0091]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one known compatibilizer in place of another with the expected result of improving the mechanical properties. (See MPEP 2143(I)(B). In addition, one of ordinary skill in the art would expect the improvement of the interfacial tension between the relatively hydrophobic phase of the polyolefin and the relatively hydrophilic phase of the starch [00090] upon substituting the ethylene acrylic acid copolymer in place of the compatibilizer of Tyanium.
Claims 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Forsberg et al. (US 2007/0243350) in view of Tyaniun (CN 102372858 (A)) as set forth above claims 10-14,17-20, 22 and 24 and further in view of Guopeng et al. (Polymer 154 (2018) 119-127 and Auffermann et al. (US 8,658,069).
Regarding claim 25, Forsberg et al. in view of Tyanium et al. teach a composition comprising polypropylene or polyethylene, calcium carbonate material, a degrading agent, a compatibilizer, plant fibers, and a biodegradable material such as starch, as previously discussed in the rejections of claims 10 and 19.
Forsberg et al. in view of Tyanium are silent on the claimed biodegradable material as recited by the instant claim. Forsberg et al. in view of Tyanium are further silent on the claimed compatibilizers.
However, Guopeng et al. teach the binary blends of polypropylene and polylactic acid with large polarity differences and the effect of adding a compatibilizer such as ethylene-(methyl acrylate)-(glycidyl methacrylate) (abstract). Guopeng et al. further teach that low amounts of PLA (i.e. 7 wt.% of PLA, Fig. 7 and Section 2.2., p.120) blended with PP an compatibilizer results in an improvement of the mechanical properties (abstract), which implies the use of small amounts of biodegradable material such as PLA with a compatibilizer is feasible in polyolefins blends. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted part of the starch of Forsberg et al. with PLA to provide similar or improved degradability while maintaining the mechanical properties of the composition (abstract). In addition, it would be obvious to one of ordinary skill in the art to have substituted one known compatibilizer in place of another with the expected result of stabilizing the interface between the polyolefin and the PLA dispersed phase which results in improved mechanical properties. (See MPEP 2143(I)(B)
Forsberg et al. in view of Tyanium are silent on the claimed plant fibers as recited by the instant claims.
However, Auffermannn et al. teach biodegradable packages films comprising natural fibers such as jute, flax fibers, among others (col.6: 65-67). ]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one known plant fiber in place of another (i.e. jute or flax fiber) with the expected result of improving mechanical and thermal properties of the final product (see U.S. PG Pub. 2019-0112479) [0035] (See MPEP 2143(I)(B).
Regarding claim 27, Forsberg et al. in view of Tyaniun teach the composition comprising 25-85 % by weight of polyolefins, 10-70 % by weight of calcium carbonate, 1-60 % by weight of starch (which correspond to the biodegradable material) [0053]; 0.5-15 % by weight of metal salts of Mn, Fe, Cu, Co (which correspond to the degrading agent) ([0016],[0017],[0050)], 2-8 parts of compatibilizer (abstract) ( approx.. 0.9-9.8 % by weight of the compatibilizer) and 10-80 % by weight of wood fibers based on the final composition [0053]; as previously discussed in the rejection of claim 24. The limitation of the “about 1 wt.%” of the biodegradable material comprising biodegradable polyesters and the “about 10-30 wt.%” of the specific compatibilizer are discussed in the rejection of claim 25, wherein it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to partially substitute the starch of Forsberg et al. with a low amount of PLA as taught by Guopeng (i.e. 3%, which is considered to read on the about 1 wt.%) to improve degradability while maintaining the mechanical properties of the composition (abstract). In addition, it would be obvious to one of ordinary skill in the art to have substituted one known compatibilizer (i.e. ethylene-(methyl acrylate)-(glycidyl methacrylate) of Guopeng in place of the compatibilizer of Forsberg in view of Tyaniun with the expected result of stabilizing the interface between the polyolefin and the PLA dispersed phase which results in improved mechanical properties. (See MPEP 2143(I)(B). Further, In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Forsberg et al. in view of Tyaniun and further in view of Guopeng et al. and Auffermann et al.
Allowable Subject Matter
Claims 16 and 26 are objected to as being dependent upon rejected base claims, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art references (Forsberg et al.., Tyanium and Auffermannn et al.) do not teach or fairly suggest a composition, wherein the composition comprises in particular biodegradable material comprising specific amounts of polylactic acid, polybutylene adipate terephthalate, polybutylene succinate, polyhydroxyalkanoates and aliphatic polyesters. While Auffermann et al. teach a composition comprising 20-90 % of an aliphatic aromatic polyester (PBAT) and 10-80% of one or more polymers including PLA, PBS, PBAT, PHA and aliphatic polyester, among others (Abstract, col.11-12), Auffermann et al. fail to teach or suggest the specific blend of multiple biodegradable polyesters including PLA, PBS, PBAT, PHA and aliphatic polyester in the claimed weight percentage ranges as recited by the instant claim. Further, one of ordinary skill in the art would not be motivated to include the specific amounts of the claimed polyester in the composition without relying on the present disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763